OPPOSITION No B 2 953 712

I3 Iniciativas y Desarrollos S.L., C/ Tutor, 43, 5ºD, 28008, Madrid, Spain (opponent), represented by Esquivel, Martin, Pinto & Sessano European Patent and Trade Mark Attorneys, Calle de Velázquez, 3 — piso 3, 28001, Madrid, Spain (professional representative)

a g a i n s t

Capra Alessandro, via Firenze 12, 15121, Alessandria, Italy (applicant), represented by Serena Corbellini, Via Frascarolo 45, 15046, San Salvatore Monferrato (AL), Italy (professional representative).

On 21/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 953 712 is partially upheld, namely for the following contested goods:

Class 25: Clothing; footwear; headgear.

Class 28: Gymnastic and sporting articles.

2. European Union trade mark application No 16 975 708 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 975 708 . The opposition is based on the following earlier rights:

• European Union trade mark registration No 6 530 323 for the word mark ‘RETROFOOTBALL’;

• Spanish trade mark registration No 2 840 133 for the figurative mark .

The opponent invoked Article 8(1)(b) EUTMR in relation to both earlier rights.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 6 530 323 ‘RETROFOOTBALL’.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 25: Clothing, footwear, headgear.

Class 35: Advertising; business management; business administration; office functions.

Class 39: Transport; packaging and storage of goods; travel arrangement.

The contested goods are the following:

Class 25: Clothing; footwear; headgear.

Class 28: Gymnastic and sporting articles; board games; electronic board games.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 25

Clothing; footwear; headgear are identically included in both lists of goods.

Contested goods in Class 28

The opponent’s clothing, footwear, headgear include sports clothing, footwear and headgear, which are items designed specifically to be worn when participating in sport. The purpose and nature of these goods are different from those of gymnastic and sporting articles, which are articles and apparatus for all types of sports and gymnastics, such as weights, halters, tennis rackets, balls and fitness apparatus. However, undertakings that manufacture gymnastic and sporting articles may also manufacture sports clothing, footwear and/or headgear. Consequently, these goods can have the same distribution channels. Therefore, there is a low degree of similarity between sports clothing, footwear and headgear and gymnastic and sporting articles.

Since sports clothing, footwear and headgear are included in the general category of clothing, footwear, headgear, the opponent’s clothing, footwear and headgear are similar to a low degree to the contested gymnastic and sporting articles.

The contested board games; electronic board games are dissimilar to all the goods and services of the earlier mark, since they differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, do not target the same consumers and are not likely to come from the same kind of undertakings.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar to a low degree are directed at the public at large. The degree of attention paid by consumers during their purchase is deemed to be average.

3. The signs

RETROFOOTBALL
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element ‘wear the legend’ in the contested mark will be understood by the English-speaking part of the public as a slogan indicating that the goods sold under the mark are wearable and that they are well known due to their significant past or history (e.g. they are replicas of items worn at a relevant sporting event and/or by a well-known sports player in the past). Therefore, for the English-speaking part of the public, this sentence is at least evocative of the characteristics of the goods, and will be perceived as a slogan with positive connotations. Therefore, it is of limited distinctiveness.

As will be explained in detail below, ‘wear the legend’ constitutes a differing element between the marks. It is therefore considered appropriate to focus on the English-speaking part of the public, for which this differing element will have a limited impact, since this will constitute the best-case scenario for likelihood of confusion to arise.

A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. At the very bottom of the contested mark there is a domain name that is barely perceptible. As it is likely to be disregarded by the relevant public, it will not be taken into consideration, and no further reference will be made to this element.

The word ‘RETRO’, included in both marks, means ‘old-fashioned’; the word ‘FOOTBALL’, also included in both marks, is the name of a sport and of the ball with which it is played; and the word ‘CLUB’ in the contested mark is used to refer to a group of people having some interest in common. Although in the earlier mark the elements ‘RETRO’ and ‘FOOTBALL’ have no space between them, consumers will clearly perceive them as independent elements within the sign, and will mentally dissect the sign into those two words.

Regarding the distinctiveness of the elements forming the marks, the words ‘RETRO’ and ‘FOOTBALL’, included in both marks, and the element ‘CLUB’ in the contested sign, are, when perceived individually, descriptive and thus non-distinctive for the goods, since they refer to the fact they have a retro look and/or are used for playing football and/or target members of clubs. However, the word ‘retro’ modifies the word ‘football’, and football is not commonly referred to as ‘retro’. The word ‘retro’ is used to refer to an old-fashioned style of various types of things, but not sports. Therefore, because of the unusual nature of the word combination in relation to the relevant goods, the words forming the marks create an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which they are composed, with the result that the words are more than the sum of their parts (12/02/2004, C‑363/99, Postkantoor EU:C:2004:86, §100).

The earlier mark has no element that is more distinctive than the others.

The applicant argues that the expression ‘RETRO FOOTBALL’ identifies ‘sports teams of the past, and is commonly used to refer to clothing and other accessories related to sports teams of the past’; it submits, inter alia, screenshots of various websites, search engines and social media sites displaying the results of a search for ‘retro football’. The applicant also refers to the meanings of these terms in various dictionaries, and submits invoices in which the terms are used within the product description field. Based on all the information submitted, the applicant claims that the expression is descriptive for the relevant goods. However, many results can nowadays be expected when searching all kinds of words, individually and in combination, and the evidence submitted relates to the results of a search for the words as such, in combination and individually, and not in relation to any specific goods or services. As regards the invoices, it cannot be inferred from the fact that the words ‘RETRO FOOTBALL’ appear in them that those words are used there to describe the characteristics of the goods being purchased. Therefore, from the evidence submitted it cannot be inferred that the words ‘RETRO FOOTBALL’ are commonly used together and/or in order to refer to/describe a specific kind of goods. Therefore, the applicant’s claim in this regard is set aside.

The contested mark contains a depiction of a man who, from his pose and clothing, and from the fact that the word ‘FOOTBALL’ appears close to the figurative element, seems to be playing football. This element alludes to the characteristics of the relevant goods (e.g. their purpose, namely clothing or articles used when playing football), and it is therefore of limited distinctiveness. The word ‘CLUB’ will be perceived as referring to the intended users of the goods (i.e. members of clubs). Therefore, it is also of lower than average distinctiveness.

The most distinctive elements in the contested sign are the words ‘RETRO FOOTBALL’, the rest of the elements being of lower than average distinctiveness and/or having a limited impact.

The words ‘RETRO FOOTBALL CLUB’ in the contested mark have a greater visual impact than the slogan below them, the latter being much smaller and in a lighter typeface.

As argued by the opponent, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). In the present case, the verbal elements of the contested sign therefore have a greater impact than the rest of elements of the mark, including the depiction of a man, which is as eye-catching as the words ‘RETRO FOOTBALL CLUB’.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, and from top to bottom, which makes the part placed at the left/top of the sign (the initial part) the one that first catches the attention of the reader. In the present case, the two elements that form the single word of which the earlier mark consists are the same as the first two words of the contested mark.

Visually, the signs coincide in ‘RETRO’ and ‘FOOTBALL’, which constitute the entire earlier mark. The signs differ in the way in which those coinciding elements are positioned (i.e. conjoined as one word versus two words arranged over two lines), and in the other, additional elements in the contested mark (i.e. the word ‘CLUB’, the depiction of a man and the slogan ‘wear the legend’).

The coinciding elements are the only elements of the earlier mark and, in the contested sign, they have a greater impact than the differing elements, because they are placed at the beginning of the contested sign, in which they are also the elements that are most distinctive and have the greatest visual impact.

For all of the above reasons, it is considered that the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the words ‘RETRO’ and ‘FOOTBALL’, which constitute the entire earlier mark and the first words of the contested sign.

The marks differ in the sound of the words ‘club’ and ‘wear the legend’ in the contested sign, which have a limited impact for various reasons. Not only will they be read and pronounced last but also at least part of the public will not pronounce ‘wear the legend’, due to its size and position, since consumers will not perceive that element as identifying the commercial origin of the goods.

If all the elements of the marks are pronounced, the signs are aurally similar to an average degree. If the slogan in the contested sign is omitted, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs convey the concept of ‘retro football’; they differ in the concepts of ‘club’ and ‘wear the legend’ in the contested sign.

Taking into account the limited impact of these differing elements, for the reasons explained above, the marks are considered conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se.

The applicant argues that the earlier mark and the elements forming it lack distinctiveness, referring in its arguments to Article 7 EUTMR. However, the Opposition Division points out that any issues related to the examination of a sign under Article 7 EUTMR are dealt with at the level of the absolute grounds examination carried out by the Office. This matter does not fall within the scope of a decision on opposition.

Considering what has been stated above in section c) of this decision, the earlier mark, in relation to the relevant goods and for the English-speaking part of the public in the relevant territory, must be considered to have at least the minimum required degree of distinctiveness. Its distinctive character resides in the unusual combination of its components, since football is not commonly referred to as ‘retro’.

5. Global assessment, other arguments and conclusion

The relevant goods are partly identical, partly similar to a low degree and partly dissimilar. They target the public at large, which will pay an average degree of attention during purchase.

The signs are visually and conceptually similar to an average degree and aurally similar to an average or a high degree, depending on consumers’ pronunciation of the contested mark.

The earlier mark, in relation to the relevant goods and for the English-speaking part of the public in the relevant territory, must be considered to have at least the minimum required degree of distinctiveness. Its distinctive character resides in the unusual combination of its components, since football is not commonly referred to as ‘retro’.

The earlier mark is entirely contained in the contested sign.

The commonalities between the marks are found in elements that have a significant impact, for the various reasons explained above, and the differing elements are considered to have a limited impact, at most.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). The average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, for all of the above reasons, it is considered that the commonalities between the signs, together with the identity or similarity between the goods, are enough to outweigh the dissimilarities between the signs, and may induce at least part of the public to believe that the conflicting goods come from the same undertaking or economically linked undertakings. This applies even to the goods found to be similar only to a low degree, since the commonalities between the marks are considered sufficient to counteract the low degree of similarity between those goods.

In its observations, the applicant argues that it owns Italian trade mark registrations and a domain name similar to those involved in the present case, and in relation to which no opposition was filed. It believes that this shows that coexistence between the conflicting signs involved in the present case is possible.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C‑498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198). Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings, since they involve different goods and/or services and signs that have different characteristics from those involved here. Therefore, the same reasoning cannot be expected to be followed or the same outcome reached.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public, and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to a low degree to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

The opponent has also based its opposition on Spanish trade mark registration No 2 840 133 .

This other earlier right is less similar to the contested mark, since it has a particular graphic depiction not present in the earlier mark and includes the additional words ‘legendary shirts’. In addition, this mark covers a narrower scope of goods than the earlier right in relation to which the comparison was carried out above.

Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Francesca CANGERI SERRANO

María del Carmen SUCH SANCHEZ

Adriana VAN ROODEN

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.